Ex Parte SUGA

Patent Trial and Appeal Board

Mar 14, 2016

13076556 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/076,556 03/31/2011
23911 7590 03/16/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
AtsuoSUGA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
107008.63496US 3971
EXAMINER
NEDIALKOV A, LILIA V
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
03/16/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ATSUO SUGA
Appeal No. 2014-008041
Application 13/076,556
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-7. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A liquid-cooled storage battery system comprising:
a secondary battery;
Appeal2014-008041
Application 13/076,556
a holding member compnsmg a flow channel of a
cooling medium for cooling the secondary battery, which holds
the secondary battery;
a cooling medium temperature measuring unit that
measures temperatures T 1 and T2 of the cooling medium at two
locations in the flow channel;
a battery temperature measuring unit that measures a
temperature T3 of the secondary battery; and
a judging unit that repetitively calculates a coefficient
a to detect a change of thermal conductive properties of
members arranged between the secondary battery and the
cooling medium so that a cooling performance of the
secondary battery based on a variation of the coefficient a is
judgeable, the coefficient a being defined as
(T3 - Tl)/(T2 - Tl), (T3 - T2)/(T2 - Tl), or
(T3 - T2)/(T3 - Tl);
wherein the flow channel and the holding member are
formed of a metal and the flow channel penetrates the inside of
the holding member.
The Examiner relies on the follo\x1ing prior art references as evidence
of unpatentability:
Eiji 1
Zhu
Wegner
Bitsche
JP 10-106638
US 2008/0233470 Al
US 7,531,269 B2
US 2009/0220850 Al
THE REJECTIONS
Apr. 24, 1998
Sep.25,2008
May 12, 2009
Sep.3,2009
1. Claim 7 is rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite.
1 The Examiner refers to this reference as "Kadouchi" (the first name of the
inventor). In the remainder of this opinion, we shall do the same to avoid
any confusion.
2
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Application 13/076,556
2. Claims 1-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kadouchi (the Examiner relies on a machine translation of
Kadouchi, provided with the non-final office action mailed June 20, 2013),
in view of Wegner and further in view of Bitsche.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kadouchi, in view of Wegner and further in view of Bitsche as applied
to claim 6 above, and further in view of Zhu.
ANALYSIS
Rejection 1
We agree with the Examiner that there is no antecedent basis for the
claimed phrase "the cooling system" at line 3 of claim 7 (Ans. 2-3), and
affirm Rejection 1. 2
Rejections 2 and 3
A.ppellant argues, inter alia, that the applied art, and in particular, the
primary reference of Kadouchi, does not suggest the claimed subject matter,
particularly with regard to the aspect of claim 1 pertaining to "a judging unit
that repetitively calculates a coefficient a to detect a change of thermal
conductive properties of members arranged between the secondary battery
and the cooling medium so that a cooling performance of the secondary
battery based on a variation of the coefficient a is judgeable". Appellants
2 We note that Appellant filed an after-final amendment on February 18,
2014 in an effort to correct claim 7 in this regard. The Examiner did not
enter this amendment according to the Reply after Final mailed by the
Examiner on March 11, 2014. Hence, the status of claim 7 as provided in
the Claims Appendix of Appellant's Appeal Brief is not correct. Appellant
does not address Rejection 1 in the Appeal Brief or Reply Brief.
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Application 13/076,556
explain that Kadouchi does not disclose the relationship of the coefficient a
with respect to the thermal conductive properties of the thermal conductive
sheet. Appeal Br. 2--4. Appellant argues the secondary references do not
cure this deficiency. Appeal Br. 4--5.
It is the Examiner's position that the coefficient C disclosed in
Kadouchi is a metric for the cooling performance of the system, and
therefore, the detecting unit of Kadouchi is capable of being programmed to
relate the variation of the coefficient C to the thermal conductive properties
of the film (the film that is incorporated into Kadouchi based upon the
proposed combination). Ans. 3-5. In specific response to Appellant's
aforementioned argument, it is the Examiner's position that it would have
been expected that variations in the value of C of Kanouchi would be
interpreted differently in the liquid-cooled system of Kadouchi as modified
by Bitsche and Wegner than in the air-cooled system of Kadouchi. Ans. 12.
It thus appears the Examiner correlates the value of C of Kanouchi with
Appellant's claimed value of a when Kanouchi is modified as proposed by
the Examiner.
In reply, Appellant states, inter alia, that:
the behavior of the coefficient C when the abnormality of the
circulating system of the cooling system is occurring in
Kadouchi is opposite to the behavior of the coefficient a when
the deterioration of the thermal conductive sheet is occurring in
the present invention. Accordingly, it would have been difficult
for one of ordinary skill in the art to have adapted the judgment
for the abnormality of the circulating system of the cooling
medium disclosed in Kadouchi to the judgment for the thermal
conductive properties of thermal passage between the
secondary battery and the cooling medium. Since Kadouchi
only discloses judging when an abnormality of the circulating
system of the cooling medium occurs but does not teach or
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Application 13/076,556
suggest determmmg a change in the thermal passage between
the secondary battery and the cooling medium, it would not
have been obvious to obtain the judgment for the thermal
conductive properties of the members disposed between the
secondary battery and the cooling medium, based upon the
disclosures of Kadouchi.
Reply Br. 2.
We are persuaded by Appellant's argument. While it is the
Examiner's position that the detecting unit of Kadouchi is capable of being
programmed to relate the variation of the coefficient C to the thermal
conductive properties of the film of the proposed combination because
variations in the value of C of Kanouchi would have been recognized as
being interpreted differently in the liquid-cooled system of Kadouchi as
modified, the record is not clear regarding exactly how the variations in the
value of C of Kanouchi would have been recognized and implemented in the
proposed modification of Kadouchi. Also, the record is not clear as to how
such a recognition would have been suggested by the applied art. 3 The
Examiner makes a correlation between Kadouchi's C and Appellant's
claimed a (Ans. 4, 12), but, we agree with Appellant that the record does not
show how to implement the adaptation of this correlation and does not
suggest to implement it. That is, as Appellant points out, none of the applied
references determine a change in the thermal passage between the secondary
battery and the cooling medium as claimed by Appellant. Appeal Br. 2-5.
Reply Br. 2-3.
3 Paragraphs [0039]-[0042] of Appellant's Specification, for example,
describe the method of judging deterioration of cooling performance and the
associated relationship of a.
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Application 13/076,556
We are thus persuaded by Appellant's arguments in the record that the
applied art falls short of suggesting a judging unit programmed to detect a
change of the thermal conductive properties of members arranged between
the secondary battery and the cooling medium, as recited in Appellant's
claims.
In view of the above, we reverse Rejection 2. Because the Examiner
does not rely upon the other applied references in Rejection 3 to cure the
stated deficiencies of Kanouchi, we also reverse Rejection 3.
DECISION
Rejection 1 is affirmed.
Rejections 2 and 3 are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
§ 1.136(a).
ORDER
AFFIRMED-IN-PART
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